CEDC International v EUIPO - Underberg (Forme d'un brin d'herbe dans une bouteille) (EU trade mark - Judgment) [2023] EUECJ T-145/22 (28 June 2023)

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(EU trade mark – Opposition proceedings – Application for a three-dimensional EU trade mark – Shape of a blade of grass in a bottle – Earlier national trade marks – Relative ground for refusal – Article 8(3) of Regulation (EC) No 40/94 (now Article 8(3) of Regulation (EU) 2017/1001) – Concept of ‘agent’ or ‘representative’ – Requirement for a direct contractual agreement)

CEDC International sp. z o.o., established in Oborniki Wielkopolskie (Poland), represented by M. Fijałkowski, lawyer,

European Union Intellectual Property Office (EUIPO), represented by D. Stoyanova-Valchanova and V. Ruzek, acting as Agents,

the other party to the proceedings before the Board of Appeal of EUIPO, intervener before the General Court, being

Underberg AG, established in Dietlikon (Switzerland), represented by A. Renck and C. Stöber, lawyers,

composed of M.J. Costeira, President, M. Kancheva (Rapporteur) and U. Öberg, Judges,

1 By its action under Article 263 TFEU, the applicant, CEDC International sp. z o.o., seeks the partial annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 22 December 2021 (Case R 1954/2020-5) (‘the contested decision’).

2 On 1 April 1996, the intervener, Underberg AG, filed an application for registration of an EU trade mark with EUIPO pursuant to Council Regulation (EC) No 40/94 of 20 December 1993 on the Community trade mark (OJ 1994 L 11, p. 1), as amended (replaced by Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended, itself replaced by Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trade mark (OJ 2017 L 154, p. 1)).

3 Registration as a mark was sought for the three-dimensional sign which is represented as follows:

4 That representation of the mark applied for was accompanied by the following description: ‘The object of the trademark is a greeny-brown blade of grass in a bottle, the length of the blade of grass is approximately three-quarters the height of the bottle’.

5 The mark applied for covers goods in Class 33 of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks of 15 June 1957, as revised and amended, corresponding to the following description: ‘Spirits and liqueurs’.

6 On 15 September 2003, Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna) (‘Polmos’), the predecessor in law to the applicant, which was replaced by the applicant following a merger by acquisition on 27 July 2011, filed a notice of opposition pursuant to Article 42 of Regulation No 40/94 (subsequently Article 41 of Regulation No 207/2009, now Article 46 of Regulation 2017/1001) to registration of the mark applied for in respect of the goods referred to in paragraph 5 above.

7 The opposition was based on, inter alia, the following earlier national trade marks:

– the three-dimensional French trade mark registered under the number 95588457, which was filed on 18 September 1995, registered on 18 April 1997 in the name of Przedsiębiorstwo Przemyslu Spirytusowego Polmos (‘PPS Polmos’), assigned to Polmos on 28 August 2001, transferred to the applicant on 28 October 2011 and renewed until 20 November 2025 in respect of ‘alcoholic beverages’ in Class 33, and is represented as follows:

– the three-dimensional German trade mark registered under the number 39848553, which was filed on 25 August 1998 and registered on 28 April 1999 in respect of ‘alcoholic beverages, in particular vodkas’, in Class 33, and is represented as follows:

– the Polish trade mark registered under the number 62018, which was substantiated by a certain number of documents from the Urząd Patentowy Rzeczypospolitej Polskiej (Patent Office of the Republic of Poland) and did not include a representation;

– the three-dimensional Polish trade mark registered under the number 62081, which was filed on 30 August 1985, registered on 20 November 1987 and renewed until 30 August 2025 in respect of ‘vodka (alcoholic goods)’ in Class 33 – that mark having been assigned in 1987 to PPS Polmos, which, in 1999, transferred it to Polmos, the predecessor of the applicant – and is represented as follows:

– the three-dimensional Polish trade mark registered under the number 85811, which was filed on 2 August 1993, registered on 3 July 1995 in the name of Polmos and renewed until 2 August 2023 in respect of ‘alcoholic products’ in Class 33, and is represented as follows:

– the three-dimensional Japanese trade mark registered under the number 2092826, which was filed on 17 December 1985 and registered on 30 November 1988 in the name of Przedsiębiorstwo Handlu Zagranicznego Agros (‘PHZ Agros’) in respect of ‘vodka’ in Class 33, and is represented as follows:

– the three-dimensional French trade mark registered under the number 98746752, which was filed on 19 August 1998 in the name of Agros Holding S.A. (‘Agros’) in respect of ‘vodka’ in Class 33, and is represented as follows:

– the non-registered three-dimensional German trade mark, which is allegedly used in the course of trade in Germany in respect of ‘alcoholic beverages, in particular vodkas’, in Class 33, in the following form:

8 The opposition was also based on other non-registered signs which were claimed in various Member States of the European Union.

9 The grounds relied on in support of the opposition were those set out, first, in Article 8(1)(a) and (b) of Regulation No 40/94 (subsequently Article 8(1)(a) and (b) of Regulation No 207/2009, now Article 8(1)(a) and (b) of Regulation 2017/1001) as regards the earlier three-dimensional French trade mark No 95588457 reproduced in paragraph 7 above; secondly, in Article 8(3) of Regulation No 40/94 (subsequently Article 8(3) of Regulation No 207/2009, now Article 8(3) of Regulation 2017/1001) as regards the trade marks referred to in paragraph 7 above; and, thirdly, in Article 8(4) of Regulation No 40/94 (subsequently Article 8(4) of Regulation No 207/2009, now Article 8(4) of Regulation 2017/1001) as regards the non-registered signs referred to in paragraph 7 above, in fine, and in paragraph 8 above.

10 On 18 October 2010, the Opposition Division rejected the opposition in its entirety.

11 On 17 December 2010, the applicant filed a notice of appeal with EUIPO, pursuant to Articles 58 to 64 of Regulation No 207/2009 (now Articles 66 to 71 of Regulation 2017/1001), against the Opposition Division’s decision.

12 By decision of 26 March 2012 (Case R 2506/2010-4) (‘the first decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal.

13 By application lodged at the Court Registry on 29 May 2012 and registered as Case T‑235/12, the applicant brought an action seeking the annulment of the first decision.

14 By judgment of 11 December 2014, CEDC International v OHIM – Underberg (Shape of a blade of grass in a bottle) (T‑235/12, ‘the first annulling judgment’, EU:T:2014:1058), the Court annulled the first decision in its entirety. It noted, as a preliminary point, that the applicant was challenging EUIPO’s findings and assessments of all of the grounds put forward in support of the opposition, that is to say, those set out in Article 8(1)(a), (3) and (4) of Regulation No 207/2009, but that the applicant had, however, stated that it was restricting its arguments solely to the Board of Appeal’s findings regarding the assessment of the evidence of use adduced, as those findings also concerned all the grounds put forward in support of the opposition. As regards the ground of opposition set out in Article 8(1)(b) of that regulation, the Court held that, in failing to exercise its discretion in an objective, reasoned manner, to decide whether or not to take into account the evidence of use of the earlier three-dimensional French trade mark No 95588457 produced for the first time before it, the Board of Appeal had infringed Article 76(2) of Regulation No 207/2009 (now Article 95(2) of Regulation 2017/1001) and Article 75 of Regulation No 207/2009 (now Article 94 of Regulation 2017/1001) by failing to give reasons for its decision on the matter. Consequently, the Court upheld the action (paragraphs 29, 69 and 103 of the first annulling judgment).

15 By decision of 29 August 2016 (Case R 1248/2015-4) (‘the second decision’), the Fourth Board of Appeal of EUIPO dismissed the appeal. It found that, even taking into account the evidence filed for the first time before it, the applicant had failed to prove the nature of use of the earlier three-dimensional mark French trade mark No 95588457 and deduced from that that the opposition based on that mark and on the grounds laid down in Article 8(1)(a) and (b) of Regulation No 207/2009 had to be rejected. As regards the other grounds of the opposition and the other earlier rights invoked, the Board of Appeal ‘explicitly refer[red] to the reasoning in its decision of 26 March 2012, Case R 2506/2010-4’. It concluded that the opposition failed on all the grounds and all the earlier rights on which the opposition was based (paragraphs 46 to 49 of the second decision).

16 By application lodged at the Court Registry on 11 November 2016 and registered as Case T‑796/16, the applicant brought an action seeking the annulment of the second decision. Those proceedings were stayed, at the request of EUIPO, from 29 May 2017 to 12 August 2019.

17 By judgment of 23 September 2020, CEDC International v EUIPO – Underberg (Shape of a blade of grass in a bottle) (T‑796/16, ‘the second annulling judgment’, EU:T:2020:439), the Court partially annulled the second decision. First, it upheld the Board of Appeal’s assessment that the use of the earlier three-dimensional French trade mark No 95588457, as represented and registered, had not been proved, with the result that the ground of opposition based on Article 8(1)(a) and (b) of Regulation No 40/94 had to be rejected. Secondly, it held that, by doing no more than ‘referring explicitly’, in respect of the grounds of opposition laid down in Article 8(3) and (4) of that regulation, to the reasoning set out in the first decision, which had been annulled in its entirety by the Court, and by then basing the operative part of the dismissal of the appeal before it in part on such a reference, the Board of Appeal had failed to provide reasons for the contested decision to the requisite legal standard, a failure which infringed Article 75 of Regulation No 207/2009. Consequently, it annulled the second decision solely with regard to the grounds of opposition set out in Article 8(3) and (4) of Regulation No 40/94 and dismissed the action as to the remainder, that is to say, in respect of all the grounds of opposition set out in Article 8(1)(a) and (b) of that regulation (paragraphs 179, 204 and 209 of the second annulling judgment).

18 By appeal lodged at the Registry of the Court of Justice on 26 November 2020 and registered as Case C‑639/20 P, the applicant sought to have the second annulling judgment set aside in part.

19 By order of 23 March 2021, CEDC International v EUIPO (C‑639/20 P, not published, EU:C:2021:227), the Court of Justice did not allow the appeal to proceed.

20 By decision of the Presidium of the Boards of Appeal communicated to the parties on 8 October 2020, the case was reallocated to the Fifth Board of Appeal, under the reference number R 1954/2020-5, for a new ruling.

21 By the contested decision, the Fifth Board of Appeal dismissed the appeal. In the first place, as regards the ground of opposition set out in Article 8(3) of Regulation No 40/94, first of all, it found that some of the earlier rights relied on could not be taken into account as a basis for the opposition. Next, the Board of Appeal took the view that the applicant, probably due to the circumstances specific to the communist regime in the Republic of Poland at the time, had not succeeded in proving the existence of a contractual relationship between itself and the intervener or between itself and PHZ Agros or Agros Trading Co. Ltd, either at the time when the mark applied for was filed or beforehand. It concluded that, with regard to the earlier three-dimensional French trade mark No 95588457 and the earlier Polish trade marks Nos 62081 and 85811, the intervener could not be considered to be acting as an agent or representative of the applicant, with the result that the opposition could not be upheld as regards the second condition set out in that article. Lastly, ‘in the interest of completeness’, it found that none of the contractual agreements submitted made explicit reference to the abovementioned earlier marks. In the second place, as regards the ground of opposition set out in Article 8(4) of that regulation, the Board of Appeal found that the applicant had not proved actual use of the non-registered German trade mark claimed, let alone use of that mark in the course of trade of more than mere local significance prior to the filing of the mark applied for, in Germany, and that the same applied to the alleged non-registered trade mark rights in the other EU countries, with the result that the opposition also had to be rejected on that ground.

– annul the contested decision in part, in respect of the ground of opposition under Article 8(3) of Regulation No 40/94;

– order EUIPO and the intervener to pay the costs incurred in the proceedings before the General Court and before the Board of Appeal.

24 Given the date on which the application for registration at issue was filed, namely 1 April 1996, which is decisive for the purposes of identifying the applicable substantive law, the facts of the case are governed by the substantive provisions of Regulation No 40/94 (see, to that effect, judgments of 8 May 2014, Bimbo v OHIM, C‑591/12 P, EU:C:2014:305, paragraph 12, and of 18 June 2020, Primart v EUIPO, C‑702/18 P, EU:C:2020:489, paragraph 2 and the case-law cited). Consequently, in the present case, so far as concerns the substantive rules, the references made by the parties in their written pleadings to Article 8(3) of Regulation No 207/2009 or to Article 8(3) of Regulation 2017/1001 must be understood as referring to Article 8(3)of Regulation No 40/94, the wording of which is identical.

25 Furthermore, since, according to settled case-law, procedural rules are generally held to apply on the date on which they enter into force (see judgment of 11 December 2012, Commission v Spain, C‑610/10, EU:C:2012:781, paragraph 45 and the case-law cited), the case is governed by the procedural provisions of Regulation 2017/1001.

26 In support of its action, the applicant relies on two pleas in law, alleging, first, infringement of essential procedural requirements, in particular of Article 95(1) and Article 94(1) of Regulation 2017/1001, read in conjunction with Article 8(3) of Regulation No 40/94 and, secondly, infringement of that latter provision itself.

27 It must be pointed out at the outset that the applicant itself states, in paragraph 35 of the application, that the present action is directed against the contested decision only in part, as regards the ground of opposition set out in Article 8(3) of Regulation No 40/94. Consequently, it must be held that the applicant does not dispute the rejection by the adjudicating bodies of EUIPO of the opposition based on the ground set out in Article 8(4) of that regulation and that that rejection is therefore final.

The first plea, alleging infringement of essential procedural requirements, in particular of Article 95(1) and Article 94(1) of Regulation 2017/1001, read in conjunction with Article 8(3) of Regulation No 40/94

28 By the first plea, the applicant alleges infringement of essential procedural requirements, in particular of Article 95(1) of Regulation 2017/1001, with regard to which it alleges failure to examine the facts correctly, and of Article 94(1) of the same regulation, on account of a failure to state reasons, read in conjunction with Article 8(3) of Regulation No 40/94. That plea consists of three complaints. The first complaint alleges that the Board of Appeal did not examine the grounds of opposition based on Article 8(3) of Regulation No 40/94 in respect of the earlier right invoked in the notice of opposition as ‘mark filed by an agent’, namely the non-registered three-dimensional German trade mark which has the shape of a bottle with a blade of grass. The second complaint alleges that the Board of Appeal did not examine whether there was an implicit relationship of agent or representative between the parties on the basis of the evidence submitted, which gave rise to a duty of trust and loyalty on the part of the intervener and its predecessor. The third complaint alleges that the Board of Appeal carried out an incorrect examination of the facts in respect of the scope of the industrial property rights covered by the relationship of agent or representative between the parties, in particular by not acknowledging that the industrial property rights to the non-registered three-dimensional German trade mark which has the shape of a bottle with a blade of grass were covered by the duty of trust and loyalty imposed on the intervener and its predecessor.

– ‘PPS Polmos’ refers to Przedsiębiorstwo Przemyslu Spirytusowego Polmos, a Polish state-owned undertaking, producer of vodkas, the predecessor of Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna), itself the predecessor of CEDC International sp. z o.o., the applicant;

– ‘Polmos’ refers to Przedsiębiorstwo Polmos Białystok (Spółka Akcyjna), the successor to PPS Polmos and the predecessor of the applicant;

– ‘PHZ Agros’ refers to Przedsiębiorstwo Handlu Zagranicznego Agros, a Polish state-owned undertaking which was entitled to export Polish vodkas abroad;

– ‘Agros’ refers to Agros Holding S.A. and/or its wholly owned subsidiary, Agros Trading Sp. z o.o. (in English, Agros Trading Co. Ltd), the successors to PHZ Agros;

– ‘Diversa’ refers to Diversa Spezialitäten GmbH, the predecessor of Underberg AG, the intervener.

31 In support of its claims, the applicant refers to various commercial agreements, principally the following:

– the importer agreement of 10 May 1983 concluded between Agros and Diversa (K7-K7a);

– the importer agreement of 8 May 1987 concluded between Agros and Diversa (K8-K8a);

– the agreement of 29 October 1993 between Agros and the intervener, which is referred to as ‘importer’ (K9);

– the agreement of 24 May 1999 (K11) between Agros and the intervener, which is referred to as ‘importer’.

The second complaint, alleging failure to examine whether there was an implicit relationship of agent or representative between the applicant and the intervener

32 By the second complaint, the applicant alleges that the Board of Appeal did not examine the evidence which, in its view, establishes the existence of an implicit fiduciary relationship between the parties through PHZ Agros or Agros acting de facto as an agent or representative of PPS Polmos or Polmos (the proprietors of the intellectual property rights, including the three-dimensional mark representing a bottle with a blade of grass). The applicant relies in that regard on various items of evidence (Enclosures K1-K11), including the agreements listed in paragraph 31 above, and submits that all those facts examined in conjunction with one another prove that there was an implicit duty of trust and loyalty imposed on Diversa or on the intervener with regard to PPS Polmos or Polmos, which were represented by the de facto agent PHZ Agros or Agros. In particular, it submits that the Board of Appeal did not acknowledge that the fiduciary nature of the relationship between the parties (or their predecessors) was evident from the importer agreements of 10 May 1983 and 8 May 1987 and from the agreement of 29 October 1993, but ‘in fact limited its examination to verifying whether there were any contracts in place’. Furthermore, the applicant argues that it is apparent from the case-law that the protection of the trade mark proprietor subsists even after the cessation of the contractual relationship from which an obligation of trust is derived. Lastly, it contends that it is necessary to take into account the communist regime in Poland in the 1970s and the ‘turbulent circumstances’ of the privatisation of state-owned undertakings in the 1990s. It concludes that the Board of Appeal failed to comply with its procedural obligations to examine the facts and to state the reasons for its decision with regard to all that evidence.

34 In accordance with the first sentence Article 95(1) of Regulation 2017/1001, in proceedings before it EUIPO must examine the facts of its own motion; however, in proceedings relating to relative grounds for refusal of registration, EUIPO is to be restricted in this examination to the facts, evidence and arguments provided by the parties and the relief sought.

35 The first sentence of Article 94(1) of Regulation 2017/1001 provides that decisions of EUIPO must state the reasons on which they are based.

36 It is apparent from settled case-law that the obligation to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasoning is correct, which goes to the substantive legality of the contested measure. The reasoning of a decision consists in a formal statement of the grounds on which that decision is based. If those grounds are vitiated by errors, those errors will vitiate the substantive legality of the decision, but not the statement of reasons in it, which may be adequate even though it sets out reasons which are incorrect. It follows that objections and arguments intended to establish that a measure is not well founded are irrelevant in the context of a plea in law alleging an inadequate statement of reasons or a lack of such a statement (see the second annulling judgment, paragraph 187 (not published) and the case-law cited).

37 According to Article 8(3) of Regulation No 40/94 (which was not amended by Regulations No 207/2009 and 2017/1001), upon opposition by the proprietor of the trade mark, a trade mark is not to be registered where an agent or representative of the proprietor of the trade mark applies for registration thereof in his or her own name without the proprietor’s consent, unless the agent or representative justifies his or her action.

38 The objective pursued by Article 8(3) of Regulation No 40/94 is to prevent the misuse of the earlier mark by the agent or representative of the proprietor of that mark, as those persons may exploit the knowledge and experience acquired during their business relationship with that proprietor and may therefore improperly benefit from the effort and investment which the proprietor himself or herself has made (judgments of 11 November 2020, EUIPO v John Mills, C‑809/18 P, EU:C:2020:902, paragraphs 72 and 83; of 6 September 2006, DEF-TEC Defense Technology v OHIM – Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T‑6/05, EU:T:2006:241, paragraph 38; and of 14 February 2019, Mouldpro v EUIPO – Wenz Kunststoff (MOULDPRO), T‑796/17, not published, EU:T:2019:88, paragraph 24). The purpose of that provision is therefore to protect the legitimate interests of trade mark proprietors and to preserve them from arbitrary misuse of their trade marks by granting them the right to prohibit registrations applied for by their agents or representatives without their consent (judgment of 8 September 2021, Qx World v EUIPO – Mandelay (EDUCTOR), T‑84/20, not published, EU:T:2021:555, paragraph 61).

39 It is apparent from the wording of Article 8(3) of Regulation No 40/94 that, for an opposition to succeed on that basis, it is necessary, first, for the opponent to be the proprietor of the earlier mark; secondly, for the applicant for the mark to be or to have been the agent or representative of the proprietor of the mark; thirdly, for the application to have been filed in the name of the agent or representative without the proprietor’s consent and without there being legitimate reasons to justify the agent’s or representative’s action; and, fourthly, for the application to relate in essence to identical or similar signs and goods. Those conditions are cumulative (judgment of 13 April 2011, Safariland v OHIM – DEF-TEC Defense Technology (FIRST DEFENSE AEROSOL PEPPER PROJECTOR), T‑262/09, EU:T:2011:171, paragraph 61).

40 It is therefore necessary to examine whether the conditions required by Article 8(3) of Regulation No 40/94 are satisfied in the present case.

41 As the Board of Appeal pointed out in paragraphs 45 to 48 of the contested decision, Article 8(3) of Regulation No 40/94 refers to the ‘proprietor of the trade mark’, without specifying the kind of earlier trade mark referred to, that is to say, only registered or also non-registered trade marks, or whether only an EU trade mark or also a trade mark of a third country is referred to.

42 In that regard, first, as regards the type of earlier mark referred to, it must be held, as the Board of Appeal found, that the concept of ‘trade mark’ within the meaning of Article 8(3) of Regulation No 40/94 also covers, in addition to registered trade marks, non-registered trade marks, but only to the extent that the law of the country of origin acknowledges rights of that type.

43 Secondly, as regards the origin of the earlier mark, since the wording of Article 8(3) of Regulation No 40/94 does not contain any reference to a ‘territory’ concerned, unlike Article 8(1)(b) of that regulation, it must be held that it is irrelevant whether or not the rights relating to the earlier mark apply in the European Union.

44 The Court upheld an equivalent principle in a judgment relating to two applications for a declaration of invalidity of two EU trade marks pursuant to Article 53(1)(b) of Regulation No 207/2009 (now Article 60(1)(b) of Regulation 2017/1001), read in conjunction with Article 8(3) of Regulation No 207/2009, on the basis of an earlier Polish trade mark, at the time when the Republic of Poland was not a Member State of the European Union. In particular, the Court stated that Article 8(3) of that regulation did not limit its scope to trade marks registered in a Member State or having effect in that State and that, otherwise, it would overlap with Article 8(1) and (5) of that regulation (see, to that effect judgment of 29 November 2012, Adamowski v OHIM – Fagumit (FAGUMIT), T‑537/10 and T‑538/10, EU:T:2012:634, paragraph 19).

45 Furthermore, in order to interpret Article 8(3) of Regulation No 40/94, account should be taken of Article 6 septies of the Paris Convention for the Protection of Industrial Property of 20 March 1883, as revised and amended (judgment of 11 November 2020, EUIPO v John Mills, C‑809/18 P, EU:C:2020:902, paragraph 65), since the former is intended to implement the latter. The term ‘proprietor’ must be interpreted accordingly, which also allows the proprietor of a trade mark which has been registered outside the European Union, but in one of the States party to that convention, to invoke its protection.

46 It follows, in other words, that the proprietor of an earlier mark in any Contracting State to the Paris Convention may rely on Article 8(3) of Regulation No 40/94 if his or her agent or representative applies for registration of the mark in the European Union without his or her consent.

47 In the present case, in paragraphs 49 to 53 of the contested decision, first of all, the Board of Appeal observed that some of the earlier rights relied on, namely German trade mark No 39848553 and French trade mark No 98746752, could not be taken into account as they had been filed after the date on which the mark applied for was filed and could not therefore serve as a basis for an opposition under Article 8(3) of Regulation No 40/94. Furthermore, it noted that the applicant was not the proprietor of Japanese trade mark No 2092826 at the time when the opposition was filed, as that mark was registered in the name of PHZ Agros at that time, and, consequently, that that Japanese trade mark did not satisfy the requirement of proprietorship at the time when the opposition was filed according to that article (K15a and K15d). Lastly, it found that Polish trade mark No 62018 had not been renewed within the legal time limits and had therefore expired. It stated that since an earlier right had to enjoy protection on the day on which the decision was adopted, that Polish trade mark could no longer constitute a valid basis in the present proceedings under that article.

48 Consequently, the Board of Appeal found that the three earlier marks (see paragraph 7 above) in respect of which the applicant had succeeded in establishing that it was the proprietor within the meaning of Article 8(3) of Regulation No 40/94 and which could therefore be taken into consideration were the earlier French trade mark No 95588457, the earlier Polish trade mark No 85811 and the earlier Polish trade mark No 62081. As regards that latter trade mark, the Board of Appeal took it into account ‘for the sake of completeness’, given that it was the ‘best scenario’ for the applicant, even though that mark had been substantiated by an English translation of an extract from the trade mark register of the Patent Office of the Republic of Poland and the original certificate of registration and renewal in Polish had been provided by the applicant on 3 July 2008 (K31 and K32), that is to say, three years after the expiry of the time limit which had been set for substantiating the opposition in accordance with Rule 19(1) and (2)(e) of Commission Regulation (EC) No 2868/95 of 13 December 1995 implementing Regulation No 40/94 (OJ 1995 L 303, p. 1) (now Article 7(1) and (2)(c) of Commission Delegated Regulation (EU) 2018/625 of 5 March 2018 supplementing Regulation 2017/1001, and repealing Delegated Regulation (EU) 2017/1430 (OJ 2018 L 104, p. 1)), a time limit which had expired on 7 July 2005.

49 The applicant does not dispute those assessments, with the exception of that relating to German trade mark No 39848553. In that regard, it is sufficient to state that that mark was filed on 25 August 1998, more than two years after the mark applied for was filed, with the result that it cannot in any way predate that mark.

50 In the light of the circumstances of the present case and in the interests of the sound administration of justice, the Court considers it appropriate, like the Board of Appeal, to examine the substance of the second condition, relating to the existence of a contractual agency or representation agreement, in the light of the earlier French trade mark No 95588457 and the earlier Polish trade marks Nos 62081 and 85811, without ruling on whether those marks were relied on and substantiated in the notice of opposition.

– The second condition, relating to the existence of a contractual agency or representation agreement

51 It must be pointed out that the attainment of the objective of preventing the misuse of the earlier mark by the agent or representative of the proprietor of that mark (see paragraph 38 above) requires a broad interpretation of the concepts of ‘agent’ and ‘representative’ within the meaning of Article 8(3) of Regulation No 40/94. Those concepts must be interpreted broadly, in such a way as to cover all forms of relationships based on a contractual agreement under which one of the parties represents the interests of the other, regardless of how the contractual relationship between the proprietor or principal, on the one hand, and the applicant for the EU trade mark, on the other hand, is legally categorised. It is therefore sufficient, for the purposes of the application of that provision, that there is some agreement of commercial cooperation between the parties of a kind that gives rise to a ‘fiduciary’ relationship, by imposing on the trade mark applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the proprietor of the earlier mark (judgments of 13 April 2011, FIRST DEFENSE AEROSOL PEPPER PROJECTOR, T‑262/09, EU:T:2011:171, paragraph 64, and of 9 July 2014, Moonich Produktkonzepte & Realisierung v OHIM – Thermofilm Australia (HEATSTRIP), T‑184/12, not published, EU:T:2014:621, paragraphs 58 and 59; see also, to that effect, judgment of 11 November 2020, EUIPO v John Mills, C‑809/18 P, EU:C:2020:902, paragraphs 84 and 85).

52 Nevertheless, some kind of contractual agreement, whether written or not, of commercial cooperation must exist between the parties. If the trade mark applicant acts completely independently, without having entered into any kind of relationship with the proprietor, he or she cannot be treated as an agent for the purposes of Article 8(3) of Regulation No 40/94. Thus, a mere purchaser or client of the proprietor cannot be regarded as an ‘agent’ or as a ‘representative’ for the purposes of that provision, since such persons are under no special obligation of trust towards the trade mark proprietor (see, to that effect, judgments of 13 April 2011, FIRST DEFENSE AEROSOL PEPPER PROJECTOR, T‑262/09, EU:T:2011:171, paragraph 64; of 9 July 2014, HEATSTRIP, T‑184/12, not published, EU:T:2014:621, paragraph 59; and of 14 February 2019, MOULDPRO, T‑796/17, not published, EU:T:2019:88, paragraph 23). It follows from that case-law that the contractual agency or representation agreement must be entered into directly by the parties, and not through third parties.

53 Consequently, as EUIPO correctly points out, the fact that an ‘implicit’ relationship may suffice for the application of Article 8(3) of Regulation No 40/94 means only that the decisive criterion is the existence and nature of a contractual agreement of commercial cooperation established in substance, and not its formal classification. Accordingly, a fiduciary and binding contractual relationship could be established by means of mere commercial correspondence between the parties, including by electronic mail (see, to that effect, judgment of 9 July 2014, HEATSTRIP, T‑184/12, not published, EU:T:2014:621, paragraphs 66 and 67). In that regard, it must be borne in mind that the opponent is free, in principle, to choose the form of evidence which it considers useful to submit to EUIPO in opposition proceedings based on an earlier right (see, by analogy, judgment of 28 June 2018, EUIPO v Puma, C‑564/16 P, EU:C:2018:509, paragraph 58). However, the existence of such a contractual relationship cannot be proved by means of probabilities or presumptions, but must be demonstrated by solid and objective evidence (see, by analogy, judgment of 12 December 2002, Kabushiki Kaisha Fernandes v OHIM – Harrison (HIWATT), T‑39/01, EU:T:2002:316, paragraph 47).

54 As regards the effect of the cessation of the contractual relationship at the time when the application for the trade mark is filed, it is not necessary for the agreement between the parties still to be in force at the time of that filing. Article 8(3) of Regulation No 40/94 also applies to agreements which have expired before the date of that filing, provided that sufficient time has elapsed for there to be good reason to assume that the obligation of trust and confidentiality still existed at the time of that filing. That broad interpretation of that provision is intended to protect the proprietor of the earlier marks even after the cessation of the contractual relationship from which an obligation of trust derived (judgment of 13 April 2011, FIRST DEFENSE AEROSOL PEPPER PROJECTOR, T‑262/09, EU:T:2011:171, paragraph 65). In other words, according to that interpretation, subject to the condition referred to above, the protection conferred by that provision subsists even after the cessation of the contractual relationship from which an obligation of trust derives.

55 From a procedural point of view, the burden of proof regarding the existence of a contractual agency or representation relationship lies with the opponent (see, to that effect, judgments of 13 April 2011, FIRST DEFENSE AEROSOL PEPPER PROJECTOR, T‑262/09, EU:T:2011:171, paragraph 67, and of 14 February 2019, MOULDPRO, T‑796/17, not published, EU:T:2019:88, paragraph 30), namely the proprietor of the earlier mark.

56 It is apparent from that case-law that, even though the terms ‘agent’ and ‘representative’ referred to in Article 8(3) of Regulation No 40/94 must be interpreted broadly, there must nevertheless be a contractual agreement of commercial cooperation between the parties of a kind that gives rise to a fiduciary relationship by imposing on the trade mark applicant, whether expressly or implicitly, a general duty of trust and loyalty as regards the interests of the proprietor of the earlier mark (judgment of 14 February 2019, MOULDPRO, T‑796/17, not published, EU:T:2019:88, paragraph 33).

57 In the present case, it was therefore for the applicant to prove before EUIPO that such a contractual agreement of commercial cooperation existed directly between the parties, that is to say, the intervener and itself, at the time when the mark applied for was filed.

58 It should be noted at the outset that it is apparent from paragraphs 51 to 56 above that the Board of Appeal was right in finding, in paragraph 56 of the contested decision, that such a fiduciary relationship could also arise implicitly, on the basis of a de facto relationship, without a formal distribution or agency contract having been signed by the parties.

59 In paragraphs 63 to 68 of the contested decision, the Board of Appeal noted that, before assessing the nature of the relations between the parties, it was required to trace the history of the parties and their relations in chronological order. It stated that the applicant had its historical origin in a first state-owned manufacturing unit founded in 1973 for the manufacturing of vodka, PPS Polmos. That company and its subsequent successors were responsible for manufacturing the product sold abroad by another state-owned company, PHZ Agros, and for its sale and distribution within Poland. The Board of Appeal observed that PHZ Agros was at that time the only company entitled to export the vodka of the manufacturer PPS Polmos. It stated that, since 1975, distribution agreements had been in existence, first between PHZ Agros and Diversa, the intervener’s predecessor, from 1975 to 1992, and then between Agros and the intervener. It pointed out that, according to those agreements, which were still in existence when the mark applied for was filed, PHZ Agros and Agros held the exclusive right to distribute Polish vodka in Germany, initially with regard to several brands and with regard to the vodka bearing the label ‘Grasovka’.

60 In paragraphs 69 to 75 of the contested decision, as regards Enclosures K1 to K11, which had been submitted by the applicant, it is true that the Board of Appeal pointed out that, prior to the filing of the mark applied for (namely 1 April 1996), the agreement of 29 October 1993 (K9) between Agros and the intervener, in which the latter was indicated as being the exclusive importer in Germany of the vodkas bearing the names ‘Wyborowa’ and ‘Grasovka’, was in force. However, it pointed out that the opposition had been filed by a different company, Polmos, which was the proprietor of the earlier French trade mark No 95588457 and the earlier Polish trade marks Nos 62081 and 85811 and that, according to the evidence submitted, the applicant or PPS Polmos had never had any direct contact with the intervener. Furthermore, it found that the applicant had not proved in any way that Agros was Polmos’ exclusive licensee or distributor of vodkas for Germany, because Agros was not expressly referred to as acting in that capacity anywhere in the abovementioned agreement. It concluded that the evidence and arguments submitted by the applicant did not prove or explain the existence of a contractual relationship between the parties, namely the intervener acting as the agent or representative of Polmos, the successor to PPS Polmos and the predecessor of the applicant.

61 In paragraphs 76 to 81 of the contested decision, the Board of Appeal also observed that there was no evidence in the present case which showed that Polmos had a commercial relationship with PHZ Agros or Agros. It took the view that the applicant’s mere allegations regarding a scheme as to how exports were handled in the ‘former communist Poland’ were irrelevant, since those rules were no longer applicable in 1996 when the mark applied for was filed, and that no evidence in support of that allegation had been provided at any time in the proceedings. It found that, although the intervener had had a relationship with Agros, it had never had one with the alleged trade mark proprietor, Polmos, or with its predecessor. It pointed out that it might be true that, at that time, both entities (namely PHZ Agros and PPS Polmos) were state-owned entities and that it was not possible to put in place any kind of licensing scheme between them, since, by law, one state-owned entity (in the present case Agros) had been designated to represent the interests of the other state-owned entity (in the present case Polmos) abroad and the ultimate beneficiary was the Polish People’s Republic, which, after the change of the system in 1989, became the Republic of Poland. It stated that, according to the applicant, which had referred for that purpose to Enclosures K17 and K31 to K36, after the privatisation of state-owned undertakings, its predecessor, Polmos, had acquired all the rights to the Żubrówka brand (which was sold in Germany under the name of Grasovka), including the earlier rights relied on in the present opposition proceedings. However, the Board of Appeal pointed out that the earlier German trade mark registration No 39848553 could not be taken into account, since its filing date post-dated that of the mark applied for. In addition, it confirmed the Opposition Division’s decision that the only agreement between Agros and Polmos which had been submitted by the applicant, namely the trade mark assignment agreement dated 28 August 2001 (K17), was subsequent to the filing of the mark applied for (that is to say, 1 April 1996) and had a different legal nature from that of a distribution agreement. It pointed out that Enclosures K31 to K36 also post-dated the filing of the mark applied for.

62 In paragraphs 82 to 86 of the contested decision, the Board of Appeal found that, even though the applicant had asked it to consider the very complex situation in the ‘former communist Poland’ and the history of the structure of the undertakings and the trade marks relating to the blade of grass, it had, however, to confine itself to the evidence which the applicant had submitted in order to prove that the intervener was or had been the agent or representative of the proprietor of the earlier rights for the purposes of Article 8(3) of Regulation No 40/94. The Board of Appeal took the view that the applicant, probably due to the circumstances of ‘communist Poland’ at the time, had not succeeded in proving the existence of a contractual relationship between itself and the intervener or between itself and PHZ Agros or Agros, either at the time when the mark applied was filed or beforehand. Taking into account the objective circumstances, such as the political system and the structure of property ownership in Poland before 1989, the Board of Appeal stated that it had assessed the entire body of evidence and had to conclude that, as regards the earlier French trade mark No 95588457 and the earlier Polish trade marks Nos 85811 and 62081, the intervener could not be considered to be acting as the agent or representative of the applicant. It also concluded that, with regard to those earlier marks, the opposition could not succeed as regards the second condition set out in that article.

63 In that regard, to begin with, it must be stated that, contrary to what the applicant claims, it is apparent from paragraphs 63 to 86 of the contested decision (see paragraphs 59 to 62 above) that the Board of Appeal examined the items of evidence submitted by the applicant in conjunction with one another throughout the administrative proceedings before EUIPO and did not ‘limit its examination to verifying whether there were any contracts in place’. Furthermore, in those paragraphs of its decision, the Board of Appeal set out at length the reasoning for its assessment. In that regard, it must be borne in mind that the obligation to state reasons is an essential procedural requirement, which must be distinguished from the question whether the reasoning is correct, which goes to the substantive legality of the contested measure (see paragraph 36 above).

64 Those findings having been made, it is necessary to examine the merits of the Board of Appeal’s assessment with regard to Article 8(3) of Regulation No 40/94.

65 It is common ground that there was no formally concluded contractual agreement between the applicant (or its predecessor) and the intervener (or its predecessor).

66 Furthermore, a contractual agency or representation agreement must be entered into directly by the parties, and not through third parties (see paragraph 52 above). Consequently, the existence of commercial relations between the intervener and a third-party company is not capable of showing that the intervener has been the agent or representative of the applicant (see, to that effect, judgment of 14 February 2019, MOULDPRO, T‑796/17, not published, EU:T:2019:88, paragraph 32), since that third-party company, in the present case PHZ Agros or Agros, and the applicant were separate legal entities.

67 The applicant relies rather on the existence of an ‘implicit’ commercial relationship with the intervener (or the intervener’s predecessor) in which it (or its predecessor) was represented by the ‘de facto’ agent or representative PHZ Agros or Agros.

68 It must, however, be stated that the existence of such an ‘implicit’ or ‘de facto’ commercial relationship between the applicant (or its predecessor) and the intervener (or its predecessor), through PHZ Agros or Agros, is not supported by the evidence placed on the file by the applicant, with which the burden of proof lies (see paragraph 55 above).

69 In the first place, as regards the agreement of 29 October 1993 (K9), which governed the relations between Agros and the intervener at the time when the mark applied for was filed (and for almost three years before that date), it must be pointed out that, in that agreement, no reference is made, either expressly or implicitly, to Agros acting as agent (or licensee, distributor or reseller) or representative in any capacity whatsoever of any third party, in particular of the applicant or its predecessor.

70 While it is indeed true that the preamble to the agreement of 29 October 1993 mentions the agreement of 8 May 1987 (K8) between Agros and Diversa, it also states that the cooperation will continue according to the conditions set out in the new agreement and that, in accordance with Section 22(a) thereof, that agreement represents the entire understanding between the parties. Consequently, contrary to what the applicant claims, such a general reference to the agreement of 1987, which expired and was replaced by the agreement of 1993, cannot result in the incorporation of an implicit obligation of trust and loyalty towards an unspecified third party, such as the applicant or its predecessor was in relation to the parties to the agreement of 1993.

71 In the second place, as regards the importer agreements of 10 May 1983 (K7) and 8 May 1987 concluded between Agros and Diversa, the applicant’s references to certain provisions of those agreements, in particular to the handwritten addendum of ‘Polmos’ to Sections 7(1), (3) and (7) of the agreement of 8 May 1987 in relation to the proprietorship of the industrial property rights, cannot call into question the finding that no direct contractual agreement between the applicant and the intervener has been proved.

72 First of all, it must be stated that the importer agreements of 10 May 1983 and 8 May 1987 were no longer in force at the time when the mark applied for was filed. In that regard, the applicant relies on the case-law according to which the protection of the trade mark proprietor subsists even after the cessation of the contractual relationship from which an obligation of trust derives, provided that sufficient time has elapsed for there to be good reason to assume that the obligation of trust and confidentiality still existed when the mark applied for was filed (see paragraph 54 above).

73 However, even if the importer agreements of 10 May 1983 and 8 May 1987 had established that there was a fiduciary relationship between the applicant and the intervener (quod non, see paragraphs 74 to 78 below), it must be held that the post-contractual obligations of trust and loyalty do not apply for an indefinite period, but only for a reasonable transition period after the termination of the agreement, during which the parties may redefine their commercial strategies. However, in the present case, those agreements which had expired were concluded approximately thirteen and nine years respectively before the date on which the mark applied for was filed. Consequently, any post-contractual relationship between the parties resulting from those agreements, as the case may be, must have gradually eroded and then terminated before the mark applied for was filed. The condition referred to in paragraph 72 above is not therefore satisfied in the present case.

74 In any event, it must be pointed out that the importer agreements of 10 May 1983 and 8 May 1987 do not contain any indication in support of the applicant’s claims regarding the existence of an ‘implicit’ obligation of trust and loyalty on the part of the intervener towards the applicant. On the contrary, it is apparent from those agreements that they were concluded only between the intervener (or its predecessor Diversa) and Agros.

75 First, as regards the importer agreement of 10 May 1983, although there is indeed a provision referring to Diversa as the ‘importer/[a]gent’ of the vodkas and the ‘representative of the producer who owns the mark’ (Section 6, sixth subsection), it must be stated that there is nothing in that agreement to justify the conclusion that the proprietor of the trade marks was deemed to be a third party in relation to the contract and an unspecified party (namely the applicant or its predecessors) instead of the contracting party Agros. On the contrary, in the provision which immediately follows that reference (Section 6, seventh subsection), it is stated that ‘Agros will protect its trademarks and/or presentation rights’.

76 Secondly, as regards the importer agreement of 8 May 1987 and, in particular, the handwritten addendum of ‘Polmos’ in the reference ‘Agros/Polmos’ in relation to the proprietorship of the industrial property rights in Sections 7(1), (3) and (7) of that agreement, it must be stated that the applicant’s interpretation cannot call into question the Board of Appeal’s analysis.

77 In that regard, it must be pointed out that, in spite of the applicant’s claim that, in January 1987, ‘the Polish trademark’ consisting of a bottle with a blade of grass was transferred by Agros to Polmos (see the chronology submitted by the applicant as Enclosure K20), the subsequent agreements concluded between Agros and the intervener on 29 October 1993 and 24 May 1999 make no reference to Polmos. It must therefore be held that the mere mention of Polmos in the importer agreement of 8 May 1987, to which it was not a party, by means of a handwritten addendum – the date of which, moreover, remains uncertain and which is neither signed nor countersigned by any party – cannot suffice to prove, or even contribute towards proving, that there was a contractual agency or representation agreement between the applicant (or, more specifically, its predecessor Polmos) and the intervener (or its predecessor Diversa).

78 It must also be pointed out, as observed by EUIPO, that the applicant’s whole line of argument is based on the hypothetical premiss that it is the proprietor of the three-dimensional mark that has the shape of a bottle with a blade of grass, which is used in conjunction with the word mark Żubrówka throughout the world and with the word mark Grasovka in Germany. However, in Section 7(2) of the importer agreement of 8 May 1987, it is expressly stated that ‘ownership of the word and image mark GRASOVKA is regulated by a separate agreement between AGROS and DIVERSA’ and that ‘said agreement is an integral component of the present contract’. Consequently, even though it may prove difficult to determine precisely to which rights or marks the handwritten reference ‘Agros/Polmos’ is supposed to apply or which vodka of Polmos is concerned, in any event, it remains clear that that reference cannot apply to the vodka sold under the Grasovka trade mark. That is confirmed by the agreement of 24 May 1999 (K11) concluded between Agros and the intervener, in which it is expressly stated in Section 12 that the name ‘Grasovka’ is a registered trade mark of the importer, namely the intervener.

79 In the third place, as regards the evidence which post-dates the filing date of the mark applied for (1 April 1996), it must be stated that that evidence also contains no indication of a contractual agreement between the parties as at the date of that filing, contrary to what the applicant claims, but rather militates against such an agreement.

80 In that regard, it must be pointed out that the applicant itself stated, in the course of the administrative proceedings and at the hearing, that it had acquired the rights to the earlier marks relied on in 1999 and that, before 1999, there was a dispute between Agros and an entity of Polmos (Warszawa) before the courts in Warsaw (Poland) as regards the registration and use of the trade marks consisting of a bottle with a blade of grass (see the chronology submitted by the applicant in Enclosure K20). Without it being necessary for the Court to rule on the substance of that dispute, which is governed by national law, it is sufficient, for the purposes of the present proceedings, to point out that the fact that there was, by the applicant’s own admission, a dispute between Agros and an entity of Polmos regarding those trade marks shows that Agros and Polmos were two separate companies, the commercial interests of which could differ substantially, or even run directly counter to each other. Consequently, it is hardly plausible that Agros could have acted as an implicit or de facto agent or representative of the applicant (or of its predecessor) with regard to the intervener (or its predecessor).

81 Furthermore, as the Board of Appeal correctly found, the only agreement between Agros and Polmos which was submitted by the applicant, namely the trade mark assignment agreement dated 28 August 2001 (K17), is subsequent to the filing of the mark applied for and has a different legal nature from that of a distribution agreement, since it does not involve a continuous relationship or a general obligation of trust and loyalty.

82 In the fourth place, as regards the other items of evidence, such as the cease-and-desist letter of 30 January 2002 and documents which allegedly prove that ‘Żubrówka’ vodka was marketed in Germany under the trade mark Grasovka, including a declaration by an employee and an extract from the online encyclopaedia Wikipedia, it must be stated that the applicant has failed to specify the nature of the Board of Appeal’s errors of assessment in that regard.

83 As regards the cease-and-desist letter of 30 January 2002, which was sent by Polmos to the intervener (K19-19a), although it is indeed true that it referred to the existence of marketing agreements according to which Agros was the exclusive mediator of Polmos for the export of the alcoholic vodka drinks ‘Żubrówka’ and ‘Grasovka’, it must, however, be stated that that letter post-dates the filing of the mark applied for by almost six years and, moreover, that a mere unilateral letter does not at all have the same evidential value as a contractual agreement between the parties, a contractual agreement which is lacking in the present case.

84 Furthermore, as regards the declaration of 16 February 2011 from a specialist technologist responsible for labelling within Polmos and the applicant since 1992, which was written in Polish and translated into English and in which he confirmed, inter alia, that, since the beginning of the 1970s, Polmos had been producing the vodka ‘Żubrówka’, each bottle of which, irrespective of changes to the labels, consistently contained a blade of grass (paragraphs 50 and 51 of the first annulling judgment), it must be borne in mind that, where a statement has been drawn up for the purposes of Article 78(1)(f) of Regulation No 207/2009 (now Article 97(1)(f) of Regulation 2017/1001) by one of the executives of the party concerned, evidential value can be attributed to that statement only if it is supported by other evidence. A statement drawn up in the interests of its author has only limited evidential value and must be supported by additional evidence, even though that does not, however, allow the adjudicating bodies of EUIPO to conclude as a matter of principle that such a statement is, in itself, devoid of any credibility. The evidential value of such a statement, taken in isolation or in conjunction with other evidence, depends, inter alia, on the circumstances of the case (see judgment of 22 June 2022, Puma v EUIPO – V. Fraas (FRAAS), T‑329/21, not published, EU:T:2022:379, paragraphs 41 and 47 and the case-law cited). In the present case, that declaration, which post-dated the filing date of the mark applied for by almost 15 years, does not contain any indication of the existence of a contractual agreement between the applicant (or its predecessor Polmos) and the intervener (or its predecessor Diversa) at that time. The same is true of the extract from the online encyclopaedia Wikipedia, which is dated 9 April 2009 and post-dates the filing of the mark applied for by 13 years.

85 In the fifth place, as regards the fundamental transformation of the political and economic system in Poland during the period from 1970 to 1990, it must be pointed out, as the Board of Appeal did in paragraphs 76 and 83 of the contested decision, that that situation was no longer applicable in 1996 at the time when the mark applied for was filed and that, in any event, the Board of Appeal had to confine itself to the evidence submitted by the applicant, because the existence of a fiduciary contractual relationship of agent or representative cannot be proved by means of probabilities or presumptions (see paragraph 53 above).

86 In the light of the foregoing, it must be held that no direct, even implicit or de facto, contractual agreement of commercial cooperation between the applicant (or its predecessor) and the intervener (or its predecessor) has been proved, with the result that no obligation of trust and loyalty on the part of the intervener (or its predecessor) towards the applicant (or its predecessor) has been established.

87 Consequently, the Board of Appeal did not make any error of assessment in finding, in essence, that the applicant had not succeeded in proving the existence of a fiduciary contractual relationship between itself and the intervener, either at the time when the mark applied was filed or beforehand, that it had not discharged the burden of proof which rested on it for the purposes of establishing the existence of a direct contractual agency or representation agreement and that it had therefore not proved that one of the cumulative conditions set out in Article 8(3) of Regulation No 40/94 was satisfied with regard to the earlier French trade mark No 95588457 and the earlier Polish trade marks Nos 62081 and 85811.

88 In that regard, it is important to point out that the fact that the second condition, relating to the existence of a contractual agency or representation agreement, is not satisfied was sufficient to reject the opposition pursuant to Article 8(3) of Regulation No 40/94 with regard to the earlier marks which the Board of Appeal had examined in the context of that ground.

89 It follows that the Board of Appeal did not infringe Article 8(3) of Regulation No 40/94 and, in particular, that it did not make any error of assessment in the application of that provision.

90 It also follows from the foregoing, in particular from paragraph 63 above, that the Board of Appeal correctly examined the facts and provided ample reasoning for its assessment, with the result that it did not in any way infringe essential procedural requirements, in particular Article 95(1) of Regulation 2017/1001 and Article 94(1) of that regulation.

92 Consequently, it is not necessary to examine the intervener’s line of argument that, in essence and for various reasons, none of the earlier rights allegedly invoked by the applicant pursuant to Article 8(3) of Regulation No 40/94 in the notice of opposition was duly invoked and substantiated, with the result that the opposition should have been rejected as inadmissible and the appeal within EUIPO should have been dismissed at the outset as unfounded.

The first complaint, alleging failure to examine the non-registered German trade mark

93 By the first complaint, the applicant alleges that the Board of Appeal failed to examine the non-registered German trade mark which has the shape of a bottle with a blade of grass in the context of the ground of opposition laid down in Article 8(3) of Regulation No 40/94 and did not state the reasons for its decision in that regard.

95 In paragraph 46 of the contested decision, in the context of its assessment of the ground of opposition laid down in Article 8(3) of Regulation No 40/94, the Board of Appeal stated that even non-registered trade marks were covered by the concept of ‘trade mark’ within the meaning of that provision. However, it did not expressly refer to any non-registered German trade mark.

96 In paragraphs 101 and 105 of the contested decision, in the context of its assessment of the ground of opposition laid down in Article 8(4) of Regulation No 40/94, the Board of Appeal pointed out that, in the notice of opposition, the applicant had identified the German trade mark which has the shape of a bottle with a blade of grass (see paragraph 7, in fine, above) as being a non-registered trade mark within the meaning of that article and that, in the grounds of opposition, the applicant had further alleged that it owned unregistered trade mark rights for the same mark in a number of other European countries. However, it observed that, even if it were true that the documents submitted showed a significant trade in vodka in Germany and Poland, there was nothing that specifically referred to the earlier non-registered right, but only to vodkas designated by word elements.

97 In paragraphs 112 to 115 of the contested decision, still in the context of the same ground, the Board of Appeal pointed out, as had been observed by the Opposition Division, that the evidence submitted did not in any way show that the non-registered German trade mark claimed had actually been used as such, or that it was recognised by the German public as a clear indication of the commercial origin of the goods. It therefore concluded that the opponent had not proved actual use of that non-registered trade mark, let alone use of that trade mark of more than mere local significance, in the course of trade prior to the filing of the mark applied for, in Germany. It took the view that the same was true of the alleged non-registered trade mark rights in the other European countries, with regard to which countries actual use of the non-registered trade mark claimed had not been proved and the applicable national law had not been mentioned. Since the necessary requirements of Article 8(4) of Regulation No 40/94 were not met for any of the non-registered trade mark rights which had been claimed, it also rejected the opposition on that ground.

98 In that regard, it must be pointed out at the outset that the applicant does not explain how the alleged omission on the part of the Board of Appeal has an effect on the examination of whether there was a contractual agency or representation agreement. In particular, the applicant has neither claimed nor established that the legal and factual context which is applicable to that alleged earlier right is different from that relating to the other earlier rights which have been examined in the second complaint of the present plea, with the result that the outcome of the case as regards that right cannot be different. The present complaint is therefore ineffective.

100 It is true that it must be borne in mind, as the Board of Appeal and the applicant pointed out, that non-registered trade marks are also covered by the concept of ‘trade mark’ within the meaning of Article 8(3) of Regulation No 40/94, to the extent that the law of the country of origin acknowledges rights of that type (see paragraph 42 above). Furthermore, according to the applicant, the protection of non-registered trade marks in Germany accrues through the use of a sign in the course of trade in so far as the sign has acquired recognition as a trade mark within the trade circles concerned (Paragraph 4(2) of the Gesetz über den Schutz von Marken und sonstigen Kennzeichen (Markengesetz) (Law on the protection of trade marks and other signs) of 25 October 1994 (BGBl. 1994 I, p. 3082), attached to the application as Enclosure K21).

101 However, the fact remains that the applicant does not dispute the Board of Appeal’s assessments in paragraphs 112 to 115 of the contested decision (see paragraph 97 above) in respect of Article 8(4) of Regulation No 40/94, which are final (see paragraph 27 above).

102 Moreover, there is nothing in the case file which calls those assessments into question, since it has not been established that the conditions laid down under German law with regard to the protection of the non-registered trade mark claimed by the applicant were satisfied, with the result that the existence of that alleged trade mark has not been proved.

103 Those assessments, which are not disputed and not called into question, necessarily entail the rejection of the opposition both pursuant to Article 8(3) of Regulation No 40/94 and to Article 8(4) of that regulation as regards the non-registered German trade mark claimed.

104 It follows that the Board of Appeal did not infringe Article 8(3) of Regulation No 40/94 in that regard.

105 Furthermore, although it is indeed true that it would have been desirable for the Board of Appeal, in the context of its examination of the ground of opposition laid down in Article 8(3) of Regulation No 40/94, to refer expressly to its assessments regarding the nonexistence of the non-registered German trade mark claimed by the applicant, as set out in paragraphs 112 to 115 of the contested decision with regard to Article 8(4) of that regulation, the fact, however, remains that that omission in the drafting has no bearing on the lawfulness of that decision or on the outcome of the present case, since it has been established, and is not disputed by the applicant, that the existence of the non-registered German trade mark claimed by the applicant has not been substantiated and such an unsubstantiated claim of a right cannot serve as a basis for an opposition under Article 8(3) of that regulation.

106 Consequently, the Board of Appeal cannot be criticised for having failed to examine the ground of opposition laid down in Article 8(3) of Regulation No 40/94 as regards the non-registered German trade mark which has the shape of a bottle with a blade of grass.

107 Moreover, the reasoning expressly set out by the Board of Appeal in paragraphs 112 to 115 of the contested decision regarding the nonexistence of the non-registered German trade mark claimed by the applicant allowed the applicant to know the reasons for the contested decision in order to be able to defend its rights. Furthermore, the Board of Appeal duly examined the facts submitted in that regard by the applicant.

108 It follows that the Board of Appeal correctly examined the facts and provided sufficient reasons for its assessment, with the result that it did not in any way infringe essential procedural requirements, in particular Article 95(1) of Regulation 2017/1001 and Article 94(1) of that regulation.

The third complaint, alleging an error of assessment as regards the scope of the industrial property rights covered by the importer agreements

110 By the third complaint, the applicant alleges that the Board of Appeal examined the facts incorrectly in respect of the scope of the industrial property rights covered by the relationship of agent or representative between the parties, in particular the rights relating to the three-dimensional trade mark which has the shape of a bottle with a blade of grass, and failed to state the reasons for its conclusion that the wording of the importer agreements (see paragraph 31 above) excluded the mark at issue. In particular, it submits that the Board of Appeal failed to take account of the wording of Section 7(1) of the importer agreement of 8 May 1987 (K8-K8a), in which the use of the word ‘including’ must be understood as indicative of a non-exhaustive list.

112 In paragraphs 87 to 91 of the contested decision, ‘in the interest of completeness’, the Board of Appeal stated that it had carried out a thorough examination of the evidence and concluded that none of the contractual agreements submitted made explicit reference to the earlier marks in question, namely the earlier Polish trade marks Nos 62081 and 85811 and the earlier French trade mark No 95588457. It pointed out that the first agreement (K4) which had been concluded for the period from 1975 to 1979 consisted of an ‘importer agreement’ (with Diversa as the importer) for the vodka brands Wyborowa, Krakus and Żubrówka stating that ‘Agros w[ould] protect its trade marks and/or presentation rights’, but without any specification of those trade marks and those rights. It stated that the later importer agreements of 10 May 1983, 8 May 1987 and 29 October 1993 (K5 to K11), which had been concluded by Diversa or the intervener, no longer referred to the Żubrówka brand, but to other vodka brands such as Wyborowa and Grasovka, and then, as from 1987, to ‘other elements of industrial property including labels, emblems and elements of the packaging relating to these vodkas’, again without specifying those ‘other elements of industrial property’. It took the view that whether that wording was meant to be related to the applicant’s marks was not clear, but that, however, the terms ‘designs, emblems, labels and packaging’, by their literal meaning, all referred to the outer elements of a product and not to the positioning of a blade of grass in a bottle, with the result that that mere wording already did not cover the mark at issue. It emphasised that it would have been desirable for the agreements submitted by the applicant to have explicitly referred to the registrations of the abovementioned Polish or French trade marks, or at least to the representation of those trade marks (see paragraph 7 above), but that that was not the case here.

113 In that regard, it must be pointed out at the outset that the present complaint is directed against an assessment which was made purely for the sake of completeness and was set out by the Board of Appeal ‘in the interest of completeness’. Consequently, a complaint which disputes such an assessment is not capable of affecting the operative part of the contested decision and must be rejected as ineffective (see, to that effect, judgments of 30 April 2013, Boehringer Ingelheim International v OHIM (RELY-ABLE), T‑640/11, not published, EU:T:2013:225, paragraphs 27 and 28, and of 7 September 2022, Peace United v EUIPO – 1906 Collins (MY BOYFRIEND IS OUT OF TOWN), T‑699/21, not published, EU:T:2022:528, paragraphs 46 and 47).

114 Moreover, the present complaint must also be rejected as ineffective in so far as the rejection of the second complaint of the first plea is sufficient to reject the opposition pursuant to Article 8(3) of Regulation No 40/94 as regards the earlier marks which the Board of Appeal examined in the context of that ground (see paragraph 88 above).

115 In any event, the present complaint is also unfounded, because it is based on a misreading of the contested decision.

116 Although it is indeed true that the Board of Appeal stated that a reference to trade mark registrations would have been desirable, it did not, however, confine itself to establishing that there was no express and specific reference to the trade marks in the agreements submitted. It must be pointed out that, in paragraphs 87 to 91 of the contested decision (see paragraph 112 above), it also based its conclusions on a thorough assessment of all of the agreements submitted, explaining why the respective marks, rights or elements of industrial property rights were not specified and why the respective wording of those agreements did not make it possible to identify clearly what they were referring to.

117 Moreover, the applicant itself states that, in order to be protected, the ‘interests’ of trade mark proprietors must be sufficiently identifiable, at least by a general reference, for the parties concerned. However, that is not the case here.

118 Furthermore, it is of little importance to ascertain whether the term ‘indem’, in the original German version of Section 7(1) of the importer agreement of 8 May 1987, means ‘including’, as the applicant claims, or rather ‘by’ or ‘by means of’, as the intervener claims, and, consequently, whether the list of ‘other elements of industrial property[,] including[/by means of] labels, emblems and elements of packaging related to these vodkas’ is illustrative, and therefore non-exhaustive, or exclusive.

119 In any event, it must be stated that no mark which has the shape of a bottle with a blade of grass is clearly identifiable in the wording of that clause. As the Board of Appeal rightly observed in paragraph 90 of the contested decision, the terms ‘labels, emblems and elements of packaging’, by their literal meaning, all refer to the outer elements of a product, and not to the positioning of a blade of grass in a bottle, with the result that that wording cannot cover such a mark.

120 The Board of Appeal was therefore right in finding that none of the contractual agreements submitted made explicit reference to any earlier marks which have the shape of a bottle with a blade of grass, in particular the earlier Polish trade marks Nos 62081 and 85811 and the earlier French trade mark No 95588457.

121 It follows that the Board of Appeal did not infringe Article 8(3) of Regulation No 40/94 and, in particular, that it did not make any error of assessment in the application of that provision.

122 It also follows from the foregoing, in particular from paragraphs 87 to 91 of the contested decision (see paragraphs 112 to 116 above), that the Board of Appeal correctly examined the facts and stated the reasons for its assessment, in accordance with Article 95(1) of Regulation 2017/1001 and Article 94(1) of that regulation.

124 It is apparent from all of the foregoing that the Board of Appeal did not infringe essential procedural requirements, in particular Article 95(1) and Article 94(1) of Regulation 2017/1001, read in conjunction with Article 8(3) of Regulation No 40/94.

The second plea, alleging infringement of Article 8(3) of Regulation No 40/94

126 By the second plea in law, the applicant alleges, in essence, that the Board of Appeal erred in law in its interpretation of the conditions for the relationship of agent or representative laid down in Article 8(3) of Regulation No 40/94 by limiting the application of that article solely to cases in which the earlier rights were expressly and specifically identified in a written contract forming that relationship. According to the applicant, the Board of Appeal thus applied an inappropriate standard of proof, whereas that provision should be interpreted broadly as covering all kinds of relationships, regardless of whether a general duty of trust and loyalty as regards the interests of the trade mark proprietor was imposed expressly or implicitly, and as covering all kinds of that proprietor’s ‘interests’ relating to the relationship between the parties. It submits that the general duty of trust and loyalty should not therefore be limited by the requirement of an express specification of all the items covered.

128 It must be borne in mind at the outset that the evidence placed on the file does not prove that the applicant (or its predecessors) ever had any direct contractual agreement with the intervener (or its predecessor) (see paragraphs 63 to 92 above). Consequently, in the absence of any proof of the existence of a direct (express or implied, written or oral) contractual agreement between the applicant and the intervener, contrary to what the applicant claims, there is no basis pursuant to Article 8(3) of Regulation No 40/94 for imposing a general duty of trust and loyalty between them, as ‘producer’ and ‘importer’, in the context of which the question of the express or implicit nature of the determination of the items covered could arise. The present plea is therefore ineffective.

129 In any event, it must be pointed out, as observed by the intervener, that that plea is based on a misreading of the contested decision and has no factual basis.

130 The Board of Appeal in no way stated that the application of Article 8(3) of Regulation No 40/94 required the contractual agreement between the proprietor and the agent to refer expressly and specifically to all the marks concerned by their commercial relationship, which would, moreover, have incurred the risk of being penalised by the Court.

131 In addition, although it is indeed true that any contractual relationship between two parties regarding the distribution of goods may, in principle, be sufficient for Article 8(3) of Regulation No 40/94 to apply, those parties must, however, know clearly and precisely which are the marks with regard to which the proprietor claims that he or she enjoys protection. Although that is usually clear in the case of word and figurative marks which are used in connection with the product distributed, it is less so with regard to other types of non-traditional marks such as three-dimensional or position marks, like those relied on by the applicant. For such non-traditional trade marks to be covered by the contractual relationship, it is desirable for the proprietor to state clearly and precisely to the agent that he or she claims and holds rights in those marks so that they are known to the agent. A specific reference in a written agreement is the most appropriate way to make certain of that.

132 However, in the present case, it must be stated that there is nothing in the case file which proves that the applicant (or one of its predecessors) informed the intervener of the special protection which it was claiming with regard to a three-dimensional mark representing a bottle with a blade of grass or with regard to a position mark consisting of a blade of grass in a bottle, such as that covered by the mark applied for.

133 Consequently, even if the Board of Appeal had intended to state that the agreements establishing the contractual relationship did not clearly mention or refer to the marks in which the proprietor was claiming rights, such a statement would have been correct in the present case, since it is not apparent from the case file that the applicant (or its predecessors) clearly and precisely claimed rights in a mark representing a bottle with a blade of grass in the context of a contractual relationship with the intervener (or its predecessor), although that would have been desirable with regard to such a non-traditional mark.

134 It follows that the Board of Appeal did not infringe Article 8(3) of Regulation No 40/94 in that regard.

135 The second plea must therefore be rejected as ineffective and, in any event, as unfounded.

136 In the light of all of the foregoing considerations, the action must be dismissed in its entirety.

137 Under Article 134(1) of the Rules of Procedure of the General Court, the unsuccessful party is to be ordered to pay the costs if they have been applied for in the successful party’s pleadings.

138 Since the applicant has been unsuccessful, it must be ordered to pay the costs, in accordance with the forms of order sought by EUIPO and the intervener.

The first plea, alleging infringement of essential procedural requirements, in particular of Article 95(1) and Article 94(1) of Regulation 2017/1001, read in conjunction with Article 8(3) of Regulation No 40/94

The second complaint, alleging failure to examine whether there was an implicit relationship of agent or representative between the applicant and the intervener

– The second condition, relating to the existence of a contractual agency or representation agreement

The first complaint, alleging failure to examine the non-registered German trade mark

The third complaint, alleging an error of assessment as regards the scope of the industrial property rights covered by the importer agreements

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You are here: BAILII >> Databases >> Court of Justice of the European Communities (including Court of First Instance Decisions) >> CEDC International v EUIPO - Underberg (Forme d'un brin d'herbe dans une bouteille) (EU trade mark - Judgment) [2023] EUECJ T-145/22 (28 June 2023) URL: http://www.bailii.org/eu/cases/EUECJ/2023/T14522.html Cite as: EU:T:2023:365, ECLI:EU:T:2023:365, [2023] EUECJ T-145/22

Court of Justice of the European Communities (including Court of First Instance Decisions)